In Star Scientific Limited v the Controller of Patents and Designs, the Delhi High Court emphasized the mandate of the Controller of Patents and Designsโ (Controller) to issue a reasoned and speaking order while deciding the fate of a patent application, regardless of the Applicant not attending the hearing.
The Court held that in such cases, unless the applicant expressed an intent to abandon the patent application, the matter must be decided based on the merits of the case.
Star Scientific Limited (Star) had responded to the First Examination Report (FER) issued by the Controller and amended their claims in time but did not attend a scheduled hearing citing a financial constraint. Starโs agent informed the Controller via email after the hearing date, explaining their inability to proceed with the prosecution requesting a decision as per statutory provisions. However, the Controller issued a refusal order under Section 15 of the Patents Act, 1970, stating that the objections remained unresolved due to non-attendance at the hearing, without providing any reasoned analysis for the refusal.
The Court found this approach inappropriate, emphasizing that the mere non-attendance of a hearing should not be equated with an abandonment of the application. The Court referred to precedent cases such as Ferid Allani v Union of India and Others, and Telefonaktiebolaget LM Ericsson (Publ) v Union of India and Others and mentioned that abandonment requires a conscious act on the part of an appellant which would manifest their expressed intention to abandon the application and that there can be no presumption.
Since Star had already provided a detailed response to the FER, the Court ruled that the Controller was obliged to issue a reasoned and speaking Order that addressed Starโs submissions as per Merck Serono S.A. v Union of India and Others, FMC Corporation v the Controller of Patents, Huhtamaki Oyj and Another v Controller of Patents and Rule 28(5) of Patent Rules, 2003.
As a result, the case was remanded back to the Indian Patent Office for reconsideration, and Star was allowed to submit written arguments within five days of this judgment while allowing the Controller to retain the discretion to grant another hearing if deemed necessary.
This judgment underscores the importance of an applicantโs clear expression of intent when abandoning a patent application. It further highlights the necessity for the Controller to issue a well-reasoned, speaking order when disposing of a patent application based on the merits and submissions on record.